WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Match Group, LLC v. Merl Matrix GmbH
Case No. D2018-0511
1. The Parties
The Complainant is Match Group, LLC of Dallas, Texas, United States of America (“United States”), represented by Sheppard Mullin Richter & Hampton LLP, United States.
The Respondent is Merl Matrix GmbH of Baar, Zug, Switzerland, internally represented.
2. The Domain Name and Registrar
The disputed domain name <tender.singles> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2018. On March 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 8, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 13, 2018. The Center received several communications from the Respondent on March 7, 2018, March 13, 2018 and March 15, 2018.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 5, 2018. The Response was filed with the Center on April 5, 2018. The Respondent filed a supplement to its Response on April 5, 2018. The Complainant filed a supplemental filing on April 13, 2018 and the Respondent filed a supplemental filing on April 14, 2018.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on April 27, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant has been in the business of providing online social networking, dating and match-making services since 2012 and operates a popular dating service under its TINDER trademarks. The Complainant engages in substantial marketing activities of these services year on year. The Complainant owns and operates the websites “www.gotinder.com” and “www.tinder.com” to facilitate its services. On the “Tinder” branded website users may create personal accounts, search and view member profiles, contribute to discussion boards, and read helpful and informative articles on the official “Tinder” blog.
The Complainant reaches consumers worldwide via its popular “Tinder” dating and social networking mobile applications for Android and iOS mobile platforms. The Android version has reached over 100 million installs since inception in July 2013 and over 10 billion dating matches since 2012.
The Complainant holds a variety of registered trademarks for both figurative and word marks in respect of the TINDER mark including, for example, United States registered trademark no. 4479131 for the word mark TINDER, registered on February 4, 2014 in international class 9 (mobile software applications) and United States registered trademark no. 4976225 for the word mark TINDER, registered on June 14, 2016 in international class 45 (Internet-based social networking, introduction and dating services).
The disputed domain name was created on March 2, 2016. The Respondent explains that it is a startup company operating a dating business. The website associated with the disputed domain name features the word “Tender” in prominent pink letters, underneath which is stated in smaller typeface “Free online dating for tender, kind and loving singles” together with a drop down menu for the user to select their gender and a “Join now” button.
Based on the screenshots produced by the Respondent from its Google AdWords account, it appears to have used the following text on its advertisements (although the Panel notes that the top line of the first advertisement may have been obscured):
Tender singles for you
You don’t have to pay at all. Join now!
tender: dating singles
Send messages for free
Find the single you’re looking for!
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant states that the disputed domain name is virtually identical to its TINDER mark but for a minor misspelling and was registered under circumstances constituting typo-squatting. The Complainant adds that while panels generally do not consider the top-level domain when evaluating confusing similarity, the Respondent’s use of the “.singles” top-level domain demonstrates that the disputed domain name is intended to relate to the Complainant’s services and strengthens the perceived connection to the Complainant.
The Complainant notes that the Respondent is not affiliated with or endorsed by the Complainant and has never been licensed or approved to use any of its registered marks, nor any confusingly similar designation, as part of a domain name. The Complainant submits that the Respondent cannot demonstrate any of the circumstances set out in paragraph 4(c) of the Policy nor any other fact that may establish rights or a legitimate interest in the disputed domain name. The Complainant contends that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services because it is willfully exploiting the Complainant’s popularity and trading on its goodwill, noting that Internet users are lured to a dubious website where users are confronted with multiple references to dating and matchmaking services which are designed to confusingly suggest that the Respondent is the Complainant or endorsed or affiliated therewith. The Complainant asserts that the Respondent has not become commonly known as “tender”, nor was it so known when the disputed domain name was registered. The Complainant adds that the Respondent cannot demonstrate a legitimate noncommercial or fair use of the disputed domain name and that in misappropriating the Complainant’s marks the Respondent is leveraging the Complainant’s goodwill and popularity for its own benefit and simultaneously diminishing the value of the Complainant, its marks and dating services.
The Complainant states that it has been using its TINDER mark since as early as August 2, 2012 and that its official domain <gotinder.com> was registered on June 22, 2012, long before the disputed domain name was registered. The Complainant asserts that the Respondent intends to misappropriate the TINDER mark to deceive consumers and draw an improper association, given that the website associated with the disputed domain name prominently features the “Tender” designation along with advertisements for free online dating. The Complainant asserts that the Respondent deliberately attempts to attract Internet users via confusion generated with the Complainant’s TINDER mark as to the source, sponsorship, affiliation or endorsement of the disputed domain name whereby such users will believe they are dealing with the Complainant or that the disputed domain name is affiliated to or endorsed by the Complainant. The Complainant adds that such actions have been made knowingly and deceitfully by the Respondent.
The Panel notes that the Response has been prepared in a style which might be described as conversational or discursive in nature and contains many comments, observations and rhetorical or hypothetical questions. The Panel has endeavored to summarize all of this material into the contentions noted below. While this is of necessity a summary, the Panel notes that all of the Respondent’s submissions were considered in their entirety in connection with the present Decision.
The Respondent requests that the Complaint be denied. The Respondent asserts that it is not engaged in typo-squatting and contrasts the position of the disputed domain name, which it notes is a valid and common word in English that relates and is essential to dating, with that of a hypothetical domain name which removes one letter from a well-known brand thus leaving a meaningless typographical variant. The Respondent submits that the former is a good faith registration while the latter is likely to be in bad faith.
The Respondent notes that the disputed domain name should not be seen as a typographical variant of the Complainant’s mark because the substituted letters “e” and “i” are on opposite sides of the keyboard such that the keys are pressed with different hands. The Respondent adds that typo-squatting only makes sense when using a “.com” domain name because browsers will add this domain automatically if a single word is entered or because Internet users typically add “.com” to any name by muscle memory.
The Respondent states that it registered multiple “.singles”, “.dating”, “.date”, and similar domains in the format “dating related word” [dot] “dating related gTLD”, noting that all of its commercial websites are about dating and that in this context “singles” is a popular search keyword. The Respondent notes that the gTLD “.singles” has a target market of online dating which is its area of business. The Respondent states that the disputed domain name is similar to the rest of its dating domains but not to the Complainant’s TINDER mark, adding that there is a naming pattern and that many of these were registered on the same day. The Respondent says that it used the thesaurus to create the list but that this is not attached because it does not trust the Complainant. The Respondent offers to make such list available if it is only accessed by the Center.
The Respondent says that it runs less than a dozen websites and submits that the traffic to such sites results from paid advertisements and returning users, adding that it has spent considerable amounts of money on each site over years, possibly prior to the Complainant having any website. The Respondent adds that it has never used the word “tinder” as a keyword or in any advertisement content, nor have its advertisements imitated the Complainant’s offering, nor did it ever have the Complainant’s mark in mind, nor has the website associated with the disputed domain name shown any attempt to be associated with the Complainant or its TINDER mark. The Respondent notes that the visitors to its site see no advertisements and generate no income unless they sign up, contending that there would be no point in it driving traffic to its landing page where there are no advertisements.
The Respondent submits that anyone whose intention had been typo-squatting would have used a “tinder” keyword. The Respondent states that unlike the Complainant it does not develop mobile applications, nor does the Respondent believe in the Complainant’s dating concept, noting that its own concept is different whereby any user may contact any other without matching. The Respondent says the Complainant’s concept is a “lookup app” while “tender” is a word used by people looking for long term relationships.
The Respondent submits that “tender” is an essential word which is popularly used in the dating business because it is one of the most suitable words for both native and non-native English speakers to describe themselves or their ideal partner on dating sites under the meaning of soft, delicate or gentle. The Respondent supports this assertion with reference to screenshots from third party dating sites which it says feature extensive use of this word in thousands or millions of profiles, the purpose of which is for users to describe their personal attributes. The Respondent adds that most people on dating sites are looking for a tender single partner and this is why one of the Respondent’s sites is named “Tender Singles” whereby it makes sense to read the second and top-level of the disputed domain name together.
The Respondent adds that “tender” is a positive trait or attribute of people and that its target audience will have a positive response to this and asserts that not all reports regarding the Complainant’s TINDER mark are universally positive such that it would not have set out to have its site confused with the Complainant’s services. The Respondent submits that the word “tinder” is not widely used on third party dating sites but, where it has been used, this is as a misspelling of the word “tender”.
The Respondent says that it only uses the word “Tender” in its logo as this is conventional for most websites rather than to set out the full domain name and that this also looks better on mobile devices because otherwise the logo would take up the whole landing page.
The Respondent asserts that it is not legally permissible or fair for the Complainant to seek to prevent others from using words such as “tender”, “dating”, “singles”, “gentle”, “kind”, “cupid”, “love”, “heart”, etc. in dating websites’ names as these words are related to dating. The Respondent specifically submits that “tender” cannot be protected for dating services as “apple” cannot be protected for selling fruit.
The Respondent performs hypothetical searches on the “Google” search engine and produces the results which it says may be performed when users enter terms such as “tender” into their browser. The Respondent says that users would not search for “tender” on its own if looking for the Respondent’s site but for “tender singles” and similarly would look not for “tinder” on its own but for “tinder app” or “tinder mobile” when looking for the Complainant’s services.
The Respondent asserts that the Complaint has been brought in bad faith because the Complainant has not previously contacted the Respondent to discuss its concerns. Had it done so, the Respondent notes that it might have considered “a possible modification”, for example an “even more different font in the logo” but says that it will no longer do so, adding that this is a case of a market leader attempting to intimidate a startup.
C. Respondent’s additional submission to Response
The Respondent provides four screenshots from its Google AdWords account having redacted certain information which it says is unrelated to this matter. The Respondent notes that Google does not permit the use of more than one AdWords account for a specific website and that it is not possible to alter the history of the account. The Respondent says that the screenshots show all data for its account together with a filter for the word “tinder” which it says indicates that such word has never been used in keywords or advertisers’ content. The Respondent says that the final screenshot shows two advertisements in “removed” status which it argues demonstrate that it has always used both of the words “tender” and “singles” in the advertisements.
The Respondent adds that the screenshot shows that is has spent CHF 34,382.49 on AdWords for advertising the disputed domain name and CHF 161,927.98 in total for all of its websites. The Respondent says that the bulk of its traffic comes from paid for advertisements. The Respondent indicates that it has spent around 30% of the average Swiss IT employee’s salary and asks why it is considered by the Complainant that it would do so for typo-squatting in bad faith if it did not trigger advertisements for the word “tinder”, especially as keywords are not visible to the user and that it is legal and permitted to use the name or brand of a competitor in a keyword. The Respondent submits that this demonstrates that the Complainant’s app was not in its mind either when it named the website or when it worked on its marketing.
D. Complainant’s supplemental filing
The Complainant notes that the Respondent has attempted to show that it has not benefitted from the Complainant’s trademark via advertisement purchases but notes that the meta tags on the website associated with the disputed domain name contain its, or its affiliates’, trademarks MATCH, PLENTY OF FISH and POF.
The Complainant submits that the fact that “tender” may have a dictionary meaning does not place it within a safe-harbor which is immune from the Policy, noting that the Respondent does not argue that the Complainant’s trademark is generic. The Complainant asserts that while a party may legitimately register a domain name consisting of a dictionary word and use the site for content relevant to the meaning of that word, the Respondent offers no evidence that “tender” means dating, suggests dating, or even calls to mind dating but rather describes an attribute by which some individuals on dating sites may identify themselves. The Complainant notes that the Respondent does not offer an explanation as to why it only registered a domain name which is a phonetic equivalent and common misspelling of the Complainant’s trademark rather than register other attributes of individuals, adding that “tender” is not generic for a dating website and that users would be more likely to search for “date”, “dating” or similar terms rather than “tender”.
The Complainant asserts that users searching for “tender” and dating would be more likely to do so based on awareness of the Complainant’s TINDER trademark, contending that it is much more plausible that the Respondent chose the disputed domain name because it is confusingly similar thereto. The Complainant submits that it strains credulity that the Respondent would spend the equivalent of more than USD 35,000 promoting an allegedly generic site which is one of many that it owns based on a dictionary word sometimes used in dating profiles. The Complainant adds that the Respondent would not do so if it did not make significantly more in return. The Complainant also asks the Panel to disregard the Respondent’s claim regarding its registration and use of other domain names as this is unsupported by evidence.
The Complainant asserts that the Respondent does not claim to have any rights at all in the term “Tender” and cannot acquire these through use or claim to be making a bona fide offering of goods and services where it is probable that it intended to benefit from confusion with the Complainant’s trademark, even if the Respondent had an established business prior to registering the disputed domain name. The Complainant adds that the Respondent admits that its business is in selling advertisement views rather than dating services and that dating services are merely the lure to the websites.
The Complainant concludes that the Respondent’s evidence proves confusion between the Complainant’s mark and the word “tinder” because the Google search which it produces treats “tender app” as “tinder app” and uses them interchangeably, also referring to “tender offers”.
E. Respondent’s supplemental filing
The following is a summary of material in the Respondent’s supplemental filing which the Panel considers is relevant to the Complainant’s supplemental filing and was not already covered in its previous Response.
The Respondent acknowledges that the meta tags relative to PLENTY OF FISH and POF should be removed and notes that it does not deny that these were present. The Respondent notes that if the Complainant had contacted it earlier it would have removed these and will do so in the coming days. The Complainant does not agree that there is any issue arising from the alleged presence of the MATCH trademark because hundreds of dating sites have a match system and that “match” is both a verb and a noun related to online dating. The Respondent asserts that it is normal for users to search for this term without the trademark reference.
The Respondent asserts that “plenty of fish” is also a generic term but states that it will remove this from the website in the coming days for reasons of goodwill. The Respondent argues that it is significant that while this term was present, the word “tinder” was not and asserts that this demonstrates that the Respondent did not consider “tinder” when creating its website.
The Respondent notes that in the extremely few cases where “tender” and “tinder” were confused in its screenshots this demonstrates that the confusion was the word “tinder” being substituted for the word “tender” and not the other way around. The Respondent submits that there is no difference between it registering the disputed domain name on its own and registering it as part of a portfolio because it has used this in the correct context and not in the context of the Complainant’s brand.
The Respondent offers to provide the list of its dating domains which will have the same structure as it contends applies to the disputed domain name, the same basis of use and similar timings of registration provided that the Complaint will then be withdrawn. The Respondent says that the Complainant is “bluffing or has a vivid imagination” in stating that the Respondent does not sell dating services and that the Complainant could not know what the Respondent does or does not sell. The Respondent notes that it is not a problem for a business to make a profit. The Respondent states that the case is about whether the Complainant can convince the Panel that people cannot register valid English words even where these do not match the Complainant’s protected mark.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Preliminary Issue: Parties’ supplemental filings
In terms of paragraph 10 of the Rules, the Panel has the power to determine the admissibility, relevance, materiality and weight of the evidence, and also to conduct the proceedings with due expedition, while paragraph 12 of the Rules provides that the Panel may request, in its sole discretion, any further statements or documents from either of the Parties. Supplemental filings which have not been sought by the Panel are generally discouraged. Nevertheless, panels have discretion over whether to accept these, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case.
Panels have repeatedly affirmed that the party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response (e.g., owing to some “exceptional” circumstance) (see section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In the present case, the Respondent first submitted an informal response on March 13, 2018 and the Panel has therefore disregarded this submission on the basis that it was superseded by the terms of the Respondent’s formal Response which was filed on April 5, 2018. The Response was followed almost immediately by an additional document some hours later also on April 5, 2018. The Panel has accepted the additional document and has combined this with the Response due to the fact that the time difference in which these materials were received by the Center is immaterial and that there does not appear to be any prejudice to the Complainant from allowing such acceptance.
With regard to the Complainant’s supplemental filing, the Panel considers it fair to accept this because it is strictly confined to matters raised by the Response which the Complainant could not reasonably have anticipated. By the same token, the Panel has accepted the Respondent’s supplemental filing insofar as directed to the Complainant’s supplemental filing to ensure that the Respondent has received the opportunity of a reply to the Complainant’s comments. The Panel is satisfied that accepting the Parties’ submissions the proceedings may still be conducted with due expedition and that each has had a reasonable opportunity to present its case.
B. Identical or Confusingly Similar
The Complainant refers to its various registered trademarks in the term TINDER as noted in the factual background section above. The Panel is satisfied that the Complainant has UDRP-relevant rights in such marks. The test of confusing similarity as established in Policy precedent typically involves a simple side-by-side visual and/or aural comparison of the disputed domain name and the Complainant’s trademark. The Complainant submits that the generic top-level domain “.singles” should either be disregarded in this analysis or alternatively should be considered to strengthen the perceived connection to the Complainant’s services.
Section 1.11.1 of the WIPO Overview 3.0 notes the consensus view of panels under the Policy that the applicable top-level domain is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Section 1.11.2 of the WIPO Overview 3.0 goes on to note that this practice is applied irrespective of the particular top-level domain and that the ordinary meaning ascribed thereto would not necessarily impact assessment of the first element, although it may be relevant to panel assessment of the second and third elements.
In these circumstances, for the purposes of the first element, the Panel conducts a simple and objective side-by-side comparison of the Complainant’s mark TINDER with the second level of the disputed domain name “tender”. It is immediately apparent to the Panel that these are alphanumerically almost identical being only a single letter different. Furthermore, when pronounced, they are extremely similar aurally or phonetically. The second syllable of both words is identical and identically pronounced. The first syllable of each, “tin” or “ten”, features a different vowel but this is not of overriding significance as they are phonetically very close and to many speakers of English would be pronounced almost indistinguishably. This is sufficient for the Panel to find confusing similarity within the framework of the Policy.
The Panel notes the Respondent’s case that the second level of the disputed domain name “tender” and the mark TINDER are different words in the English language. This does not in the Panel’s opinion displace the impression of confusing similarity made upon it when they are compared on the above basis. To this observation must be added the fact that the evidence before the Panel indicates that these words can be and are mistaken for one another based on the Google search engine’s assumption that a search for the “tender app” must mean the “tinder app”. A common misspelling of a trademark, whether or not such misspelling creates a different word, is typically considered by panels to be confusingly similar to the relevant mark for the purposes of the first element. This stems from the fact that the disputed domain name contains sufficiently recognizable aspects of the relevant mark, including for example an identifiable reference to the letter string of such mark (see section 1.9 of the WIPO Overview 3.0 and ZB, N.A., dba Zions First National Bank v. Oneandone Private Registration, 1&1 Internet Inc / John Mike, WIPO Case No. D2017-0137).
The Panel also notes that both of the Parties are somewhat exercised as to whether the disputed domain name could be described as a case of “typo-squatting” in their discussion of the first element of the Policy. As indicated above, the first element is concerned with the issue of identity or confusing similarity between the trademark and domain name concerned and not with “typo-squatting” per se. In other words, it is not necessary for the Complainant to establish that the Respondent is “typo-squatting” in order to prove identity or confusing similarity according to the Policy’s requirements.
In any event, the Panel notes for completeness that it is unimpressed by the Respondent’s argument that it is not taking advantage of a typographical variant of the Complainant’s trademark because the letters “e” and “i” are on opposite sides of a standard “qwerty” keyboard. A very similar assertion was disposed of in a previous case under the Policy (see Groupon, Inc. v. JackPotSoft LLC, WIPO Case No. D2014-2138) in circumstances where all but one of the letters in comparison were identical, distinctive and in the same order such that the overall appearance was very similar. While there may not be quite the same level of distinctiveness in the present case, the letters other than the “e” and “i” are identical and in the same order such that the overall appearance is very similar. It should also not be overlooked that, despite its contention, the Respondent is not necessarily expecting all of the visitors to its website to use a standard “qwerty” keyboard. When discussing its logo, the Respondent makes it clear that it is expecting to attract users of mobile devices. Such users would not necessarily be typing the disputed domain name on a “qwerty” keyboard nor indeed on any keyboard which features much distance between the letters “e” and “i”. They are more likely to be entering text into such devices by a variety of ergonomic means which can also include elements of predictive texting and even the spoken word.
An essential part of the Respondent’s case is that the combination of the mark and the top-level domain signals legitimate coexistence or fair use. However, as noted in section 1.11.2 of the WIPO Overview 3.0, panels typically focus their inquiry into such a matter on the second element of the Policy. Similarly, while the Complainant contends that the top-level domain corresponds to its area of trade, thus signaling an abusive intent, panels typically focus their inquiry into such a contention on the third element. The first element, by contrast, is viewed as a low threshold test concerning the trademark owner’s standing to file a complaint under the Policy, in other words whether there is a sufficient nexus to assess the principles captured in the second and third elements (see section 1.7 of the WIPO Overview 3.0).
In all of these circumstances, the Panel finds that the Complainant has met the test under the first element.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. Where the panel finds that a complainant has made out such a prima facie case, the burden of production shifts to the respondent to bring forward evidence of such rights or legitimate interests.
The Panel is satisfied that the Complainant has made out the requisite prima facie case based on its submissions that the Respondent is not affiliated with or endorsed by the Complainant, is not licensed or approved to use its registered marks, is not commonly known as “tender” and is using the disputed domain name to point to a dating website which may suggest to visitors that the Respondent is the Complainant or is affiliated therewith. In these circumstances, the Panel turns to the Respondent’s submissions and evidence to determine whether its case is capable of rebutting such prima facie case.
While the Response is not directly addressed to the provisions of the Policy, it is clear to the Panel that the Respondent effectively seeks to engage paragraph 4(c)(i) of the Policy in that it claims to have used the disputed domain name in connection with a bona fide offering of dating services and, in so doing, is simply making a relevant descriptive use of the dictionary word “tender” in the disputed domain name. The key to whether or not the Respondent’s business does constitute such a bona fide offering for the purposes of paragraphs 4(a)(ii) and 4(c)(i) of the Policy is the Respondent’s motivation in registering the disputed domain name. In other words, did the Respondent register it to take advantage of the fact that it is confusingly similar to the TINDER trademark or, as the Respondent claims, because it is a word describing the activity of dating? In the Panel’s opinion, this question may readily be answered by the presence of meta tags on the Respondent’s website containing other trademarks of the Complainant and its affiliates, namely, MATCH, PLENTY OF FISH and POF. Such presence indicates that it is more probable than not that the Respondent had it in mind to exploit certain well-known trademarks of competing dating service providers in connection with attracting traffic to its website. In the Panel’s view, this unavoidably taints the Respondent’s assertion that it registered the disputed domain name purely in association with an alleged descriptive term “tender singles” and without reference to the Complainant’s TINDER trademark.
The Respondent answers this issue by pointing out that the word “match” is a dictionary word, “plenty of fish” is a well-known phrase and “tender”, as contained in the disputed domain name rather than the meta tags, is itself a dictionary word. The problem with this assertion however is that MATCH and TINDER are well-known trademarks of the Complainant and its affiliates, as is PLENTY OF FISH, and all of these marks are registered and used in connection with dating services similar to that purporting to be operated by the Respondent. Furthermore, the Respondent has no similar answer to the presence of the POF trademark which does not fit with its argument of the use of dictionary words and phrases unrelated to any trademark value. Faced with the weight of evidence of use of trademark terms it is simply not credible for the Respondent to argue that its activities relate to a purely descriptive use of the word “tender”.
Before leaving the topic of the meta tags, the Panel notes for completeness that it does not accept the Respondent’s assertion that there is necessarily any qualitative difference between the absence of the word “tinder” from the meta tags and the presence of the word “tender” in the disputed domain name. There is sufficient evidence of the use of terms other than “tinder” for their trademark value in the meta tags to question the Respondent’s protestations that it is only concerned with dictionary meanings.
Turning to the Respondent’s specific assertion that it has rights and legitimate interests in a domain name comprised of a dictionary phrase, section 2.10.1 of the WIPO Overview 3.0 notes the consensus view of panels under the Policy that merely registering a domain name comprised of a dictionary word or phrase does not by itself confer rights or legitimate interests. The section adds that the domain name should be genuinely used or demonstrably intended for use in connection with the relied upon dictionary meaning and not to trade off third party trademark rights. In the present case, considering the term “tender singles”, the manner of its use and the lengthy and somewhat tortuous explanations by the Respondent as to its alleged descriptiveness, the Panel doubts whether it could realistically be seen as a common dictionary phrase which is genuinely being used in connection with the relied upon dictionary meaning. In any event, the Panel need look no further than the presence of the third party trademarks in the Respondent’s meta tags to dispose of any suggestion that the term is not being used to trade off third party trademark rights.
Section 2.10.1 of the WIPO Overview 3.0 goes on to note that Panels also tend to look at factors such as the status and fame of the relevant mark and whether the Respondent has registered and legitimately used other domain names containing such words or phrases. Here, the Respondent’s case must be viewed in the context of the undeniable status and fame of the Complainant’s TINDER mark based on the evidence before the Panel. Such mark is extremely well-known and widely understood to be associated with dating services similar to those which the Respondent claims to offer. This factor on its own suggests that the Respondent could not establish rights and legitimate interests in the term “tender” or “tender singles” by virtue of a claim to the dictionary meaning.
The Respondent has claimed that it has registered and legitimately used other domain names containing similar allegedly descriptive words or phrases. However, it has chosen not to share details within the context of the present administrative proceeding. The Respondent offers to disclose these if the case is withdrawn against it. This is not something to which any complainant could be reasonably expected to consent when it does not know what the list contains, nor is there any framework set down by the Policy for such a conditional disclosure. In any event, even had the Respondent disclosed a list of domain names of the kind which it asserts that it has registered, the Panel doubts that this would necessarily have altered its conclusion given the fame of the Complainant’s TINDER mark, its closeness in appearance to the second level of the disputed domain name and the fact that the Respondent has used terms targeting other trademarks of the Complainant or its affiliates in its meta tags.
In all of these circumstances, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case that it has no rights and legitimate interests in the disputed domain name and accordingly that the Complainant has met the test under the second element of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Complainant’s core submission on this topic is that its TINDER mark is exceptionally well-known in the field of dating services such that the Respondent must have known of it and intended to take advantage of the confusing similarity between such mark and the word “tender” in the disputed domain name to attract consumers to its website, effectively a submission in terms of paragraph 4(b)(iv) of the Policy. To this, the Complainant adds its discovery of the meta tags on the Respondent’s website which, while not including the TINDER mark, target certain of its other trademarks or of its affiliates and reinforce the sense that the Respondent’s overall motivation was to seek increased traffic from confusion with such trademarks. The Respondent’s case is largely reliant on its assertion that it selected the term “tender singles” as a description of its dating service and without reference to the Complainant’s TINDER mark.
Bearing in mind the fact that panels have consistently found that the mere registration of a domain name that is confusingly similar (particularly domain names comprising typographical variants) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith (see section 3.1.4 of the WIPO Overview 3.0) the Respondent faces something of an uphill struggle at the outset of this topic in convincing the Panel of an alleged good faith motivation. The second level of the disputed domain name is almost identical to the Complainant’s mark both alphanumerically and phonetically. It is confusingly similar to the Complainant’s mark on a straightforward comparison. The Respondent acknowledges that the top-level domain “.singles” corresponds to the area of trade of the Complainant and claims to be engaged in providing similar services. There is no reason to believe that the Respondent would have been unaware of the Complainant or its rights in the TINDER mark at the point of registration of the disputed domain name. As an initial observation before turning to the detail of the Respondent’s submissions, the Panel notes that the above factors on their own point in the direction of bad faith registration and use.
The Respondent argues that it is employing the phrase “tender singles” in which the “tender” component describes the ideal partner or “single”, noting in its contentions that it makes sense to read the second and top-level of the disputed domain name together. However, the Respondent chooses to display the capitalized word “Tender” on its own in a large typeface at the top of its website, eschewing for that purpose the alleged descriptive “tender singles” phrase. The Complainant effectively argues that this seems to look far too like its well-known TINDER trademark for comfort. The Respondent’s answer is simply that this is the logo that it has adopted and that it could not fit the chosen phrase “tender singles” on to the landing page of a mobile device. The Respondent seeks to explain that the logos on many websites do not make reference to the top-level of the domain name, citing <wikipedia.org> and <ebay.com> as examples. To the Panel, this position is unconvincing. There is no reason why a logo could not have featured the complete alleged descriptive term, vertically if not horizontally, and the fact that it does not fortifies the impression that the TINDER mark is being targeted. There is a substantive difference between the example domain names cited by the Respondent and the disputed domain name. On the Respondent’s own admission, the top-level domain in <tender.singles> is absolutely required to complete the descriptive phrase on which it seeks to rely in its attempt to distinguish this from the Complainant’s mark. Its absence in the prominent logo at the top of the landing page, particularly given the capitalization of “Tender”, does not point in the direction of a good faith motivation for the registration and use of the disputed domain name.
Finally, the Panel turns to the meta tags on the Respondent’s website. Despite having attempted to put forward an assurance that its motivation was simply to make use of a dictionary phrase unrelated to the TINDER mark, the Respondent is found to have made use of other trademarks in the coding of its website which target the Complainant and its affiliates, presumably in an attempt to draw traffic to its website. The Respondent merely offers to remove these, arguing that two of them consist of common words. It offers no explanation for the presence of the POF mark. It points out that it did not use the TINDER mark in such meta tags. The effect of the Complainant’s case however is that the Respondent did not need to do so because a confusingly similar variant of such mark already features in the disputed domain name and has been advertised actively. The Respondent’s case does not appear to have any credible answer on this matter and in the Panel’s view this is the indicator which points most strongly in the direction of registration and use in bad faith.
The Panel notes that the Respondent claims to have spent a considerable amount of money on advertising the website associated with the disputed domain name. This is not something on its own which points in the direction of a good faith motivation. A substantial investment in advertising a website can neither cure the fact that the domain name which points to it is confusingly similar to a well-known trademark nor does it provide an excuse or explanation for the targeting of related third party trademarks in the code of such website.
In all of these circumstances, the Panel finds that the Complainant has met the test under the third element of the Policy and that the disputed domain name has been registered and is being used in bad faith.
E. Reverse Domain Name Hijacking
Given the Panel’s determination that the Complainant succeeds on all three elements of the Policy, the Panel rejects the Respondent’s submission that the Complaint was brought in bad faith and thus makes no finding of Reverse Domain Name Hijacking.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <tender.singles> be transferred to the Complainant.
Andrew D. S. Lothian
Date: May 11, 2018